04-01-2010 (Newsletter Issue 9/10)Accession to the Singapore TreatyThe World Intellectual Property Organization (WIPO) informs of the deposit by the Slovak Republic of its instrument of accession to the Singapore Treaty on the Law of Trademarks. The Treaty will enter into force on May 16, 2010.
Legal basis is the Trademark Act no. 506/2009 on Trademarks of December 8th, 2009, in force since January 1st, 2010.
The Slovak Republic is a member of the Madrid Agreement and the Madrid Protocol. Since May 1st, 2004, the Slovak Republic has been a member of the European Union. Trademark protection is obtained by registration.
Owner of trademarks that were protected in former Czechoslovakia were able to choose, whether their trademarks should be protected in only one or in both successor states.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, threedimensional forms and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Industrial Property Office of the Slovak Republic.
Multiple-class applications are possible.
Foreign applicants need a local agent except of natural persons who are nationals of a state party to the Agreement on the European Economic Area and legal persons with headquarters or the seat of their enterprises in the state party to the Agreement on the European Economic Area. Such party to the proceeding has to notify to the Office about the delivery address in the territory of the Slovak Republic.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness is proven through use before filing the application of trademark.
After the examination, the trademark application is published for 3 months in the monthly “Slovakian Patent Office Bulletin”. The duration from first filing to publication or first office action is approx. 4-5 months. At the end of the opposition period, the trademark is registered and published if no opposition has been filed or opposition has been rejected.
The opposition period is 3 months from publication of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
3 months. From the first day of the next month after the date of the publication in the WIPO Gazette.
Protection begins with the date of registration. However, the trademark owner may also claim the damages caused by actions committed after the date of publication of the application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or later has not been used for a continuous period of 5 years, it can be subject to cancellation requested by third party.
The official fee is approx. EUR 165.50 for up to three classes and approx. EUR 16.50 for each additional class.
Trademark Licence Agreement
In the Slovak Republic a trademark licence agreement has to be in writing. Licensing of unregistered marks is not permitted, but it is possible to conclude a contract with regard to the use of unregistered marks. A trademark can be licensed for all or part of the goods or services for which it is registered and for an agreed territory. Licences may be exclusive or non-exclusive. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licensee. The recordal of a licence is not mandatory, but the licence becomes effective and enforceable against third parties only after its entry in the Register of the Intellectual Property Office of the Slovak Republic. The trademark owner or licensee may request this entry. There is no time frame for a recordal. There is no standard content but the agreement must contain the scope of protection and the territory of validity.
The following document is required for the recordal of a licence:
1. The original or a certified copy of the agreement must be submitted with the IP Office.
The licence agreement becomes effective and enforceable against third parties on the day of its entry into the Register of the IP Office of the Slovak Republic. Registered licences are published In the Bulletin of the Industrial Property Office.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. A registered user can call upon the trademark owner to institute infringement proceedings and the trademark owner shall then be obliged to institute infringement proceedings. Both an exclusive and a non-exclusive licensee may institute proceedings against infringers without requesting the proprietor to do so, but the licensee shall inform the proprietor about the infringement. He is not required to cite the trademark owner as co-defendant in any such proceedings, unless otherwise agreed upon in the contract.
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We would like to thank the following law firms for their assistance in updating the information provided:
LITVAKOVA A SPOL., Bratislava, Slovakia
Čermák a spol., Prague, Czech Republic
LITVAKOVA A SPOL., Bratislava, Slovakia